Patent Reexamination: Invalidating a Patent Without Litigation
You have received a cease-and-desist letter, or you have been sued for patent infringement. Every demand like that rests on one assumption: that the patent is valid. Often it is not. Frequently the most direct way out of an infringement threat is to show that the patent should never have been granted. You do not need a courtroom to do it.
Ex parte reexamination asks the United States Patent and Trademark Office to take a second look at an issued patent in light of prior art the original examiner never saw. Claims that do not survive are canceled, and a canceled claim cannot be asserted against you or anyone else.
What ex parte reexamination is
Reexamination is a proceeding before the USPTO, created by statute, in which the Office reexamines the claims of an issued patent against earlier patents and printed publications. Any person may request it, at any time during a patent's period of enforceability. The request must raise a "substantial new question of patentability": typically prior art that was never before the examiner, or art whose significance was not appreciated. The USPTO must decide whether to order reexamination within three months of the request.
If reexamination is ordered, the patent is examined again by the Office's specialized Central Reexamination Unit. The proceeding ends with a reexamination certificate that confirms the claims, narrows them by amendment, or cancels them.
One more feature matters to many of our clients: an ex parte reexamination request can be filed through us without identifying who asked for it.
Why reexamination instead of litigation
Cost. Defending a patent suit in district court is one of the most expensive forms of litigation there is. A reexamination is a filing with the USPTO, at a small fraction of that cost.
A canceled claim ends the threat. If the claims asserted against you are canceled, there is nothing left to infringe.
A narrowed claim may no longer reach you. Claims are often amended in reexamination to survive the new prior art. A claim that had to be narrowed may no longer cover your product at all, and a substantively amended claim is subject to intervening rights: it generally cannot be asserted against activities from before the certificate issued.
Leverage. Even while a reexamination is pending, the patent owner must account for the risk that the asserted claims will not survive. That changes settlement and licensing conversations. Courts also have discretion to stay co-pending litigation while the USPTO reexamines the patent.
Anonymity. A competitor considering enforcement against you does not need to know who brought the prior art to the Office.
Why Underwood & Associates
We are experts in reexamination procedure, and we come to it from an unusual direction: seventeen years of successfully prosecuting patents before the USPTO. Knowing how to get claims allowed teaches you, case after case, exactly where allowed claims are vulnerable: which arguments persuaded an examiner, and which pieces of missing prior art would have changed the outcome.
Our extensive patentability-search practice is the other half of the job. A reexamination is only as strong as the prior art behind it, and our practitioners and scientists search patents, journals, and technical literature across every field we practice in, routinely uncovering art that was never discovered during the original prosecution.
Reexamination is conducted entirely before the USPTO. That is not an adjacent forum for us; it is where our registered practitioners have worked every day since 2007.
How we work
- Confidential consultation, free. Send us the patent number and the letter or complaint you received. We will give you a straight answer about whether reexamination fits your situation.
- Invalidity search and candid assessment. We search for invalidating prior art and tell you in writing how strong it is. If the art is not there, we say so before you spend more.
- The complete request. We prepare the complete reexamination request: the claim charts, the analysis of each substantial new question, and every required form. Then we file it with the USPTO.
- A realistic picture of what follows. After the request is granted, an ex parte proceeding runs between the Office and the patent owner; the requester's active role is limited by design. That limit is part of why reexamination costs a fraction of litigation, and we make sure the request is built to stand on its own.
As with everything we do, costs are quoted up front, before work begins.
Contact us for a free, confidential consultation. If you have already been sued or given a deadline to respond, tell us the date.
Nothing on this page is legal advice. Whether reexamination is the right response to a particular letter or lawsuit depends on the patent, the prior art, and your circumstances; that is what the consultation is for.